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Gordon v. Drape Creative, Inc.

IP/Entertainment Case Law Updates November 30, 2018

Ninth Circuit finds triable issue of fact as to whether defendants’ use of plaintiff’s “Honey Badger” catchphrases in greeting cards is explicitly misleading as to source or content, reversing district court’s grant of summary judgment.

Plaintiff Christopher Gordon posted a popular YouTube video titled “The Crazy Nastyass Honey Badger” featuring National Geographic footage of a honey badger overlaid with a narration by Gordon. The video is known for its catchphrases “Honey Badger Don’t Care” and “Honey Badger Don’t Give a Sh--.” Gordon trademarked the former phrase for various classes of goods, including greeting cards. Gordon brought claims alleging trademark infringement under the Lanham Act against defendants Drape Creative Inc., a greeting card design company, and Papyrus-Recycled Greetings Inc., a greeting card manufacturer, for selling greeting cards using variations of “Honey Badger Don’t Care” or “Honey Badger Don’t Give a Sh--.”

The district court granted summary judgment for the defendants, holding that Gordon’s claims were barred by the test set forth in Rogers v. Grimaldi. On appeal, the Ninth Circuit found a triable issue of fact as to whether defendant’s use of plaintiff’s “Honey Badger” trademark in greeting cards added artistic expression beyond the expression presented by the mark itself, reversing the district court’s grant of summary judgment (read our summary of that decision here). In this November 20, 2018 opinion, the Ninth Circuit withdraws its prior opinion.

Under the Lanham Act, an owner of a mark has a cause of action against any person who “use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.” To prevail on a claim under the Lanham Act, an owner of a mark must prove that it has a valid, protectable trademark, and that the use of that mark is likely to cause confusion. Rogers construes the Lanham Act to apply to expressive works “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” “[T]hat balance will normally not support application of the Act, unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or … explicitly misleads [consumers] as to the source or content of the work.” The Rogers two-prong test allows Lanham Act claimants to prevail only where the use of the mark is not artistically relevant to the work, or where the use of the mark explicitly misleads consumers as to the source or content of the work.

Here, the Ninth Circuit found that as a threshold matter, greeting cards are expressive works to which Rogers applies. With regard to Rogers’ first prong, which requires proof that defendants’ use of Gordon’s mark was not “artistically relevant” to defendants’ greeting cards, the court found that there is no issue of material fact, explaining that the artistic relevance need only exceed zero, which is easily satisfied in this instance. However, the court found that there is a genuine issue of material fact as to Rogers’ second prong — whether defendants’ use of Gordon’s mark in their greeting cards is “explicitly misleading as to source or content.” In applying this prong, the court balances “the public interest in avoiding consumer confusion” against “the public interest in free expression.” While the mere use of a trademark alone does not suffice to make use explicitly misleading, a more relevant consideration is the degree to which the junior user uses the mark in the same way as the senior user, and the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself. The Ninth Circuit held that a jury could determine that this use of Gordon’s mark was explicitly misleading as to the source or content of the cards, reversed the district court, and remanded for further proceedings. “This case, however, demonstrates Rogers’s outer limits. Although defendants’ greeting cards are expressive works to which Rogers applies, there remains a genuine issue of material fact as to Rogers’s second prong — i.e., whether defendants’ use of Gordon’s mark in their greeting cards is explicitly misleading.”